Specialized vs Cafe Roubaix: Or the perils of taking on the little man

Paris-Roubaix is one of the most famous races in the professional cycling calendar, providing a test of riders’ mettle as they race across the pavé of northern France. It’s no surprise then that the race has spawned some of cycling’s most iconic imagery with pictures of cobbled roads and bedraggled riders.

Pedro Horrillo photographed by Timm Kölln after competing in Paris-Roubaix

Bicycle manufacturer Specialized has looked to capitalise on some of this mythology with a range of bikes called Roubaix, a not far fetched call given that Specialised saw victories on their bikes in 2012, 2009 and 2008 with Tom Boonen and in 2010 with Fabian Cancellara.

In the past Specialized has looked to actively protect its trademarks taking cease and desist orders against Epic Wheel Works and Mountain Cycle over the use of Stumptown.

In the latest move to protect its trademarks, Specialized served a cease and desist order against local Canadian bicycle shop Cafe Roubaix, which like Specialized, had looked to capitalise on the mythology of Paris-Roubaix.

The story got picked up by local newspaper Calgary Herald, capitalising on the David and Goliath aspect of the story as multinational cycling corporation took on Afghanistan war veteran suffering from post traumatic stress disorder.

The story quickly moved from local to international as the story got picked up by the cycling blogosphere with consumers venting their opinions on Twitter, Facebook and Tumblr among others.

Specialized argued that if they didn’t defend their trademark, they would loose it drawing on the principle of acquiescence, although Red Kite Prayer give a thoughtful rebuttal of this claim.

Whilst I am not about to get into debates about trademark law, what is interesting about the case is how it points to businesses needing to pay greater attention to the implications of their actions as we live in an increasingly networked world. Actions in one part of the world can quickly cascade into another, particularly when there is a story that can tap into people’s interests and passions.

Fortunately the story does appear to have a happy ending. Advanced Sports International which owns the worldwide rights to the Roubaix name and which licensed its use to Specialized see no problem with Cafe Roubaix using the name according to a report in Bicycle Retailer.

Now we can worry about more important matters, such as spending more time out on our bikes.